Ex Parte Boghosian

Patent Trial and Appeal BoardOct 5, 2016

11153132 (P.T.A.B. Oct. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111153, 132 06/15/2005 65074 7590 10/05/2016 MCNEES WALLACE & NURICK, LLC 100 PINE STREET P.O. BOX 1166 HARRISBURG, PA 17108-1166 FIRST NAMED INVENTOR Alan Ara Boghosian UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. LDC-993 (08563-0173) 8461 EXAMINER SINGH, SUNIL K ART UNIT PAPER NUMBER 3722 MAILDATE DELIVERY MODE 10/05/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN ARA BOGHOSIAN Appeal2014-009584 Application 11/153,132 Technology Center 3700 Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and JOHN G. NEW, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. Â§ 134 involving claims to a method of taking a dental impression. The Examiner rejected the claims as failing to comply with the written description requirement and as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm the written description rejection but reverse the obviousness rejections. 1 Appellant identifies the Real Party in Interest as Dentsply, International incorporated (see App. Br. 1 ). Appeal2014-009584 Application 11/153,132 Statement of the Case Background "It is known to apply a wetting agent to a tooth preparation prior to the taking of an impression with hydrocolloid impression materials such as polyethers" (Spec. 1 i-f 0002). The Specification teaches that a "drawback to the use of ... dental impression materials has been their hydrophobicity, making it difficult to take precise impressions of the details of the tooth and/or hard tissue when it is wetted" (Spec. 1 i-f 0002). The Claims Claims 13-18 and 25-32 are on appeal. Claim 13 is representative and reads as follows (emphasis added): 13. A method of taking a dental impression of dentition comprising the steps of: conditioning a surface comprising one or more of dentition and a dental appliance by the application thereto of a \vetting agent to form a controlled hydrophilic \vet film, wherein the controlled hydrophilic wet film is formed by brushing the wetting agent onto the dentition, the brushing controlling the thickness and hydrophilicity of the controlled hydrophilic film to a thickness and hydrophilicity that is capable of inducing flow of an impression material that comes into contact with the controlled hydrophilic film, the flow being sufficient to flow into sub-gingival places; contacting the film on the one or more of dentition and a dental appliance with a dental impression material selected from the group consisting of hydrophilic and hydrophobic dental impression materials; and wherein said wetting agent comprises a surface active agent and a carrier; wherein the carrier is a water soluble composition comprising glycerin; and 2 Appeal2014-009584 Application 11/153,132 wherein the conditioning comprises rendering the surface of the one or more of dentition and a dental appliance surface hydrophilic. The issues A. The Examiner rejected claims 13-18 and 25-32 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement (Final Act. 2). B. The Examiner rejected claims 13-18, 25-29, 31, and 32 under 35 U.S.C. Â§ 103(a) as obvious over Millar,2 Winston,3 Fiedler,4 and Hare5 (Final Act. 3---6). C. The Examiner rejected claim 30 under 35 U.S.C. Â§ 103(a) as obvious over "the modified Millar" and Lubbers6 (Ans. 6-7). A. 3 5 U.S. C. Â§ 112, first paragraph The Examiner finds that: The disclosure as originally filed does not have proper support for the limitations "the brushing controlling the thickness and hydrophilicity of the controlled hydrophilic film to a thickness and hydrophilicity that is capable of inducing flow of an impression material that comes into contact with the controlled 2 Millar et al., The effect of a surface wetting agent on void formation in impressions, 77 J. PROSTHETIC DENTISTRY 54--56 (1997) ("Millar"). 3 Winston et al., US 2005/0084460 Al, published Apr. 21, 2005 ("Winston"). 4 Fiedler, J., US 5,830,951, issued Nov. 3, 1998 ("Fiedler"). 5 Hare et al., US 5,554,028, issued Sept. 10, 1996 ("Hare"). 6 Lubbers et al., US 2007/0065770 Al, published Mar. 22, 2007 ("Lubbers"). 3 Appeal2014-009584 Application 11/153,132 hydrophilic film, the flow being sufficient to flow into sub- gingival places." (Final Act. 2). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that the Specification lacks descriptive support for the limitation "the brushing controlling the thickness and hydrophilicity of the controlled hydrophilic film" in claim 13? Findings of Fact 1. The Specification teaches that "application of the pre- impression wetting agent according to the present invention would create a very hydrophilic surface that would enable a very hydrophilic impression material ... or even somewhat hydrophilic material to flow easier into these difficult to reach sub-gingival places" (Spec. i-f 13). 2. The Specification teaches that "[i]n delivering the wetting agent, any suitable device or method may be employed, such as by using a brush" (Spec. ,-r 12). 3. The Specification teaches that the "material may also include thickening agents, diluents or fillers to modify the viscosity of the material as may be desired" (Spec. i-f 11) and that the "viscosity of the present invention may be changed as desired, as long as a film thickness is achieved that is conducive to the impression to be made" (Spec. i-f 15). 4. The Specification teaches that the "agent ... is 'painted' or otherwise applied onto the entire preparation in an isolated environment (usually with cotton rolls as is standard practice)" (Spec. i-f 17). 4 Appeal2014-009584 Application 11/153,132 5. The Specification teaches that "if a controlled hydrophilic film is applied to the tooth and preferably employing the same surfactant as may be present in the impression material itself, 'like' surfaces would permit greater flow" (Spec. 19). Principles of Law "[I]t is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure, ... or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement" Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010). Analysis Appellant contends that the "language present in claim 13 includes recitation of thickness and hydrophilicity to induce flow of an impression material, the flow being sufficient to flow into sub-gingival places (see claim 13, lines 5-9). Support for these limitations are present throughout the specification, as originally filed" (App. Br. 3). Appellant contends that the "explicit disclosures, as well as other disclosures in the specification, clearly support the limitation 'the brushing controlling the thickness and hydrophilicity' in contrast to the Examiner's position" (Reply Br. 2). The Examiner responds that "the disclosure does not support the limitation that the controlled wet film is a result of brushing the composition as claimed by the Appellant" (Ans. 7). We find that the Examiner has the better position. While we agree with Appellant that each of the individual words appears in the Specification 5 Appeal2014-009584 Application 11/153,132 (FF 15), the Specification does not teach or possess the concept that it is the brushing that controls the thickness and/or hydrophilicity of the film as required by claim 13. That is, the reasonable interpretation of the phrase "the brushing controlling the thickness and hydrophilicity" is that by the mechanical act of brushing, the viscosity and/or hydrophilicity of the film is altered in a manner suitable to result in flow to sub-gingival locations. While the Specification certainly teaches that the film may have different viscosities or thickness (FF 3) and there is at least some support for a "controlled hydrophilic film" that might suggest that films with different hydrophilicities may be used (FF 5), there is no teaching or possession in the Specification of the concept that the brushing action itself modifies the thickness and/or hydrophilicity in any way. Conclusion of Law The evidence of record supports the Examiner's conclusion that the Specification lacks descriptive support for the limitation "the brushing controlling the thickness and hydrophilicity of the controlled hydrophilic film" in claim 13. B. 35 U.S.C. Â§ 103(a) over Millar, Winston, Fiedler, and Hare The Examiner finds that Millar teaches "a method of taking a dental impression that includes the steps of: conditioning the surface ... by applying a polymerizable wetting agent that is comprised of a surfactant and a carrier" (Ans. 3). The Examiner acknowledges that Millar "fails to disclose a surface active agent that has a carrier that is water soluble composition comprising glycerin" and that Millar and Winston do not 6 Appeal2014-009584 Application 11/153,132 disclose flow of the impression material "into a sub-gingival portion of the dentition" (Ans. 4). The Examiner finds that "if not inherent, it is obvious that the wetting agent and the impression material taught by Millar/Winston/Fiedler will flow into a sub-gingival portion of the dentition due to composition and physical properties of the wetting agent and the dental impression material" (Ans. 5). The Examiner also finds it obvious to "modify the water soluble carrier of the prior art to include a water soluble composition that contains glycerin, since these are simple substitution of one known element for another to obtain predictable results" (Ans. 6). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that Millar, Fiedler, Winston, and Hare render obvious the method of claim 13? Findings of Fact 6. Millar teaches "Hydrosystem is a modified polydimethyl siloxane wetting agent that can be sprayed onto prepared tooth surfaces before an impression is recorded" (Millar 54, col. 1 ). 7. Millar teaches that "This study, which compares automixed hydrophobic (Elite) and hydrophilic ... materials, suggests an improved quality of impression with the hydrophilic materials" (Millar 55, col. 2 to 56, col. 1 ). 8. Winston teaches that "water is often necessary to provide a uniform mixing of the components of the dentifrice, provide the proper viscosity for the dentifrice so it can flow from the tube or effectively coat the teeth if used as a professional gel and the like, and/or provide a toothpaste 7 Appeal2014-009584 Application 11/153,132 consistency that is pleasing when placed in the oral cavity during brushing" (Winston 1 i-f 0017). 9. Hare teaches "a method of preparing an impression of dentition in the oral cavity" (Hare, col. 2, 11. 24--25). 10. Hare teaches that "eleven teeth were then recontaminated with the latex glove and then each was treated according to a different respective Example 2-12 by lightly rubbing with the respective composition of the respective Example using a cotton swab" (Hare, col. 6, 11. 53---63). 11. Fiedler teaches that a "key component of the composition of the invention is the surfactant for imparting wettability, preferably comprising an HLB of about 8-11 and a pH of about 6-8. A most preferred surfactant is a nonionic surfactant, nonylphenoxy poly( ethyleneoxy) ethanol having an HLB of about 10.8" (Fiedler, col. 4, 11. 48-52). 12. The Specification teaches that "[i]t is preferred to include an orally suitable carrier with the wetting agent, such as a water soluble or partially water soluble substance such as water, glycerin, glycerol or a polyol or the like" (Spec. i-f 10). Principles of Law A prima facie case for obviousness "requires a suggestion of all limitations in a claim," CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 8 Appeal2014-009584 Application 11/153,132 Analysis Appellant contends "the claimed combination fails to disclose a water soluble composition including glycerin" (App. Br. 9). Appellant contends that "the Examiner erroneously concludes that various carriers are equivalents. This is simply not recited in the specification, nor has any evidence been proffered showing that water and glycerin are equivalents" (Reply Br. 5). The Examiner responds that Glycerin is [] an alcohol (tri-hydric alcohol). Hare further discloses that water is the 'preferred carrier' thus implying that there is room for other suitable carriers. Water and Glycerin have the same wetting properties, both having hydrogen bonds. Therefore, it is the Examiner's position that both glycerin and water are both art recognized equivalents. (Ans. 11). We find that Appellant has the better position. Claim 13 specifically requires that "the carrier is a water soluble composition comprising glycerin". The Examiner does not identify the use of glycerin as a carrier in the cited prior art. In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on Appellant's disclosure or the mere fact that the components at issue are functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 596-97 (CCPA 1958); In re Lam, 35 Fed. Appx. 889, 894--95 (Fed. Cir. 2002). Here, the Examiner provides no evidence that glycerin and water were art recognized equivalents, particularly for use as carriers in making dental 9 Appeal2014-009584 Application 11/153,132 impressions. While such a listing in a prior art reference might reasonably provide rebuttable evidence of equivalence, there is a basic difference between (a) a showing by an applicant for patent of what the art knows to be equivalents or what means taken from the art he can use indiscriminately without affecting his invention in carrying it out, and (b ), a showing that he has found, as a part of his discovery or inventive process, that certain things may be used to achieve the same result. Ruff, 256 F.2d at 596. The facts here fall in the second category, because the disclosure in the Specification also does not identify water and glycerin as art recognized equivalents (FF 12), but rather simply lists both as desirable earners. Conclusion of Law The evidence of record does not support the Examiner's conclusion that Millar, Fiedler, Winston, and Hare render obvious the method of claim 13. C. 3 5 U.S. C. Â§ 103 (a) over Millar and Lubbers This rejection relies upon the underlying obviousness rejection over Millar, Winston, Fiedler, and Hare (Ans. 7). Having reversed that rejection, we also necessarily reverse the further obviousness rejections over Lubbers of claim 30, which ultimately depends from claim 13, because the Examiner does not identify a teaching of glycerin in Lubbers. SUMMARY In summary, we affirm the rejection of claims 13-18 and 25-32 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. 10 Appeal2014-009584 Application 11/153,132 We reverse the rejection of claims 13-18, 25-29, 31, and 32 under 35 U.S.C. Â§ 103(a) as obvious over Millar, Winston, Fiedler, and Hare. We reverse the rejection of claim 30 under 35 U.S.C. Â§ 103(a) as obvious over Millar and Lubbers. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 11